Similar trademarks examples consist of two businesses in the same industry using trademarks that are alike enough to cause market confusion. Trademarking products and services allows companies to optimize the profit derived from the brands they have worked hard to develop. Registering a symbol or brand name as a trademark allows the trademark holder to sue others who attempt to use the trademark.

However, the trademark does not keep other companies from inadvertently or purposely confusing customers with a similar mark. Obvious trademark infringement, such as copying the same name of another company, is punishable by law. However, most cases are less cut and dry. Large and small companies alike can be drained of resources by the money and effort required for a trademark infringement lawsuit. In addition, large companies can incur reputation damage if they are accused of trademark infringement and the case is reported by the media.

Likelihood of Confusion

If a competitor is using a similar trademark and you were the first to begin using this trademark, you must prove that customers are likely to be confused by the similar mark. In all cases, the court will use the same standard: under the circumstances, is it probable that consumers purchasing the goods in question will be misled? Several elements are used to make this determination.

Why Identifying Trademark Confusion Matters

It's important to understand why a mark is likely to cause marketplace confusion. For one thing, you don't want to spend the money and time to submit a trademark application which will be rejected because of the likelihood of confusion. Organizations should also be aware of similar marks and whether the use of these marks constitutes infringement.

Keep in mind that company trademarks are used to represent the standards and values we rely on as consumers of the company's products and services. For example, if you purchase counterfeit designer jeans that appear to be from your favorite brand but the quality is not as expected, you will lose trust in that brand name. Companies whose trademarks are infringed upon end up losing business through both direct loss of profit from lost sales and the loss of profit from damaged brand reputation.

The Polaroid Factors

Courts often use the standard from a 1961 case involving Polaroid to determine whether marketplace confusion is likely. These factors are used as a guide and are not applied in the exact same way by different courts.

  • How strong is the trademark of the company that began using it first?
  • How similar are the two marks in question?
  • How similar are the products and/or services offered by the companies in question?
  • How likely is it that the senior trademark user will eventually expand its operations and create more overlap?
  • Did the alleged infringer act unknowingly or in bad faith?
  • Is there evidence that actual customer confusion has already occurred?
  • How sophisticated is the market for this product?
  • How does the quality of the junior trademark user's goods compare to that of the trademark owner's goods?

Breaking Down the Factors

When you apply for a trademark through the United States Patent and Trademark Office, they check that your application is for a business element that can actually be trademarked and that the mark is distinctive enough to qualify for registration. They will also do a trademark search to see if another similar mark exists in your industry. If this occurs, your trademark application will be rejected.

You can avoid this rejection by retaining an experienced trademark attorney to perform this search before you send in your application. Dealing with the effects of a trademark rejection can be challenging and costly. Federal circuit courts use many factors to determine whether a likelihood of marketplace confusion exists.

Strength of the Priority Trademark

The trademark that is determined to be stronger than the other takes legal priority when it comes to protection. "Strong" in this context is defined as advertised more frequently, more unique, and less diluted. Marks are considered weak when they cannot stand alone to represent the brand. The court may conduct a survey to determine whether the trademark in question has secondary meaning for consumers.

Proximity of Products and Services

Proximity means similarity in the products or services offered. If two products are very different, they can be represented by similar trademarks. Will an ordinary, sensible buyer buy item A and believe that it is item B? This is the basic standard for determining the likelihood of confusion.

When it comes to the relatedness of products or services, the more similarities the trademarks have with each other, the less similar the products or services need to be in order to support a discovery of likelihood of confusion. For instance, if a company sells a soap called “Ole' Spice,” there is a likelihood that it may be confused with “Old Spice.” However, if a business is selling a cooking seasoning product, it is unlikely that confusion will occur.

The protection that comes with a trademark may extend to related products. For instance, a trademark for canned salmon may provide protection for other types of canned fish. Also, a trademark for a kerosene lamp may extend to an electric lamp. In these situations, the court takes into consideration whether or not the buyers will reasonably expect the products to come from the same source.

When a trademark is popular and extensively used, consumers are more likely to expect the product base to be expanded. For example, will McDonald's trademark for restaurants be confused with Quality Inn's McSleep motel services? According to a federal court, there is a likelihood. This is because the prefix “Mc” has been so widely used by McDonald's that its use in nonfood industries is expected. In fact, the company has already expanded into the children clothing industry with its McKids apparel line.

Similarly, the Coca-Cola trademark has been licensed for many nonfood items, including clothing, watches, bags, glassware, and puzzles. It has also been infringed on certain unlikely products. For example, it has been applied to “can wraps,” labels that wrap around alcoholic beverages to disguise their contents.

The court also takes into consideration the similarity of distribution and advertising channels. The evidence is evaluated separately to determine whether or not consumers or distributors will be potentially exposed to confusion. For instance, if the infringed party directly sells salami to consumers but the infringer sells salami in bulk to delis, this may be a significant factor in preventing an infringement claim.

Similarity of the Mark

When two trademarks are similar, there is a greater likelihood that they will be confused with each other and infringement will occur. Trademarks can be similar in a number of ways. When comparing trademarks, their appearance, sounds, connotations, and commercial impressions must be evaluated. Such comparisons allow for a considerable amount of subjectivity.

Connecting a company's name with trademarks can help prevent infringement by keeping them dissimilar even if they have similar visual or audio elements or confusingly similar interpretations. For generic or relatively similar trademarks, adding the company's name wherever they are used can be very effective in reducing potential confusion.

However, the question is, “How similar is too similar?” You can find the answer in court cases. So far, it can be seen that changing a letter, adding a prefix, or adding clarifying information is usually not enough to avoid trademarks that seem similar. The following are examples of court cases where the Trademark Trial and Appeal Board (TTAB) found two trademarks to be confusingly similar:

  • Simoniz v. Permanize.
  • Magnavox v. Multivox.
  • Zirco v. Cozirc.
  • Platinum Puff v. Platinum Plus.
  • Maternity Yours v. Your Maternity Shop.
  • Flossies for dog treats and Flossbone for edible dog chews.
  • Hypnotiq for liqueur and Hopnotic for beer.
  • Woody Stout, Woody Wheat, and Woody Brown Ale for beer.
  • Frickin' and Flip'n Chicken for restaurant services.
  • Alair for medical devices for the therapeutic treatment of pulmonary diseases and Holaira for medical devices for the treatment of obstructive lung diseases.

Although the aforementioned trademarks are not identical, the courts concluded that they were similar enough to confuse the average consumers. Consider brands that you do not see every day and are not really familiar with. Is it easy to assume that a similar looking or sounding name is the same as another that you previously saw in a television commercial? There are also many instances where the TTAB found that a likelihood of confusion did not exist, including:

  • Keep It Simple Syrup for simple syrups and Not So Simple Syrup for beverage syrups.
  • La Monarca Bakery & Cafe for cafe and restaurant services and Monarch Roasting for single-serve coffee cartridges.
  • My Zen Tea and Zen Tea Traders for tea.

Deciding whether or not two trademarks are confusingly similar can be a difficult task. You need to bear in mind that the more similar the trademarks, the less related their products or services have to be in order for a likelihood of confusion to occur.

Phonetic equivalence or the similarity of sounds is another factor you should consider when determining the likelihood of confusion. Nonetheless, it is almost impossible to predict how any trademark will be pronounced by the public. This means that you cannot rely on correct pronunciation in and of itself. Therefore, if two trademarks can be interpreted as having phonetic similarities, there is a possibility that likelihood of confusion may exist. According to the courts, the following trademarks are too phonetically similar:

  • Seiko v. Seycos.
  • Cana v. Canya.
  • Kresco v. Cresco.
  • Intelect v. Entelec.

Actual Confusion

When determining trademark infringement, it is not essential to prove actual confusion. This is because actual confusion can cause the infringed party to sustain immediately evident damage or costs, such as potential customers contacting another company and misdirected phone calls, emails, or mail. Nevertheless, such evidence can be compelling in a trademark infringement case.

Companies may sometimes conduct surveys to find out if actual confusion exists. Such surveys can be costly and may subvert the infringed party's case if they are improperly conducted. One example of this is a software company offering an application that is confusingly similar to another application from an established company, except that it is of a lower quality and has different licensing requirements. This can result in costly problems such as unintentional license violations on behalf of the users and support requests delivered to the wrong company.

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